www.uspto.gov
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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`17/049,911
`
`10/22/2020
`
`Mitsumasa MIZUNO
`
`065933-0795
`
`9388
`
`McDermott Will and Emery LLP
`The McDermott Building
`500 North Capitol Street, N.W.
`Washington, DC 20001
`
`LEEDS, DANIEL JEREMY
`
`3731
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`PAPER NUMBER
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`NOTIFICATION DATE
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`DELIVERY MODE
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`01/26/2023
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`ELECTRONIC
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`Please find below and/or attached an Office communication concerning this application or proceeding.
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`Thetime period for reply, if any, is set in the attached communication.
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`Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
`following e-mail address(es):
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`mweipdocket@mwe.com
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`PTOL-90A (Rev. 04/07)
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`

`

`
`
`Commissioner for Patents
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`www.uspto.gov
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Application Number: 17/049,911
`Filing Date: 22 Oct 2020
`Appellant(s): Panasonic Intellectual Property Management. Co., Ltd.
`
`Takashi Saito
`For Appellant
`
`EXAMINER’S ANSWER
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`This is in response to the appealbrief filed 11/17/2022
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`

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`Application/Control Number: 17/049,91 14
`Art Unit: 3731
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`Page 3
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`Every ground of rejection set forth in the Office action dated 6/14/2022 from
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`which the appealis taken is being maintained by the examiner exceptfor the grounds of
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`rejection (if any) listed under the subheading “WITHDRAWN REJECTIONS.” New
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`grounds ofrejection (if any) are provided under the subheading “NEW GROUNDS OF
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`REJECTION.”
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`Current State of Claims
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`Claims 1-4 are pending examination.
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`The following ground(s) of rejection are applicable to the appealed claims.
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`Claim 1, and all subsequent dependentclaims are rejected under 35 U.S.C. 112(a)
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`or 35 U.S.C. 112 (pre-AlA), first paragraph, as failing to comply with the written
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`description requirement. The claim(s) contains subject matter which was not described
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`in the specification in such a way as to reasonably conveyto one skilled in the relevant
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`art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C.
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`112, the inventor(s), at the time the application wasfiled, had possession of the claimed
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`invention.
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`Claim 1, and all subsequent dependentclaims are rejected under 35 U.S.C. 112(b)
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`or 35 U.S.C. 112 (pre-AlA), second paragraph, as being indefinite for failing to
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`particularly point out and distinctly claim the subject matter which the inventor or a joint
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`

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`Application/Control Number: 17/049,91 14
`Art Unit: 3731
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`Page 4
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`inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as
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`the invention.
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`Claims 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over Hornschuch,
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`(US 3,150,725) in view of Geiras, (US 2019/0199164), in view of Gelfand, (US,
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`3,952,814).
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`Responseto Argument
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`Applicant's arguments regarding the 35 U.S.C. 112(a) and 35 U.S.C.112(b)
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`rejections have been fully considered but they are not persuasive. However, as
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`Applicant has agreed to follow the Examiner's suggestions for correction, the issue
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`would be moot pending entry of Applicant’s proposed amendment, as discussedin the
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`11/17/2022 Appeal Brief submitted by the Applicant. However, since the appealed
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`claims are the claims rejected in the Final Rejection, mailed 6/14/2022, the examiner
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`respectfully requests this rejection be sustained.
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`Applicant's arguments regarding 103 rejections have been fully considered but
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`they are not persuasive. The Applicant makes one primary argument concerning the
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`combination between the primary reference, Hornschuch, and the supplemental
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`reference, Geiras — “Appellant respectfully argues that Geiras is not analogous art to the
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`present application”. The Examiner does not agree with this assertion for the following
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`reasons;
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`

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`Application/Control Number: 17/049,91 14
`Art Unit: 3731
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`Page 5
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`A.
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`In responseto applicant's arguments againstthe references individually, one
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`cannot show nonobviousnessby attacking references individually where the rejections
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`are based on combinations of references. See /n re Keller, 642 F.2d 413, 208
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`USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir.
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`1986). This is commonly called a piecemeal analysis of the references. Simply put, the
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`Applicant is analyzing the Geiras reference in a vacuum, without consideration for the
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`primary reference and the combination of references. The primary reference of
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`Hornschuchutilizes a system of a magnetically driven motor for a tool that is nearly
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`identical to the device of the current application. This portion of the rejection is the
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`basis for the further combination with Geiras, and must be the baseline for any further
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`analysis of the combination device. The Hornschuchreferenceis silent regarding the
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`specific limitation “a moment of inertia on the side of the driven magnet member being
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`larger than a moment of inertia on the side of the driving magnet member’. Hornschuch
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`does contain both of these items in an arrangement that satisfies the claimed limitation
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`of the current application. What is lacking is a specific discussion of the mathematical
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`relationship between the driven and driving magnet. As discussed in the Final
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`Rejection, this feature is in fact discussed in the Geiras reference as stated in the
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`Rejection, as part of the design processfor a device of this type. By combining the
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`references, the motor design of Hornschuch is combined with the design parameters of
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`Geiras. As such, the Analogous art argumentfails as it neglects to discuss the effect of
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`the 103 combination.
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`

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`Application/Control Number: 17/049,91 14
`Art Unit: 3731
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`Page 6
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`B. While the Piecemeal Analysis argument discussed above in section A should
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`render the Applicant’s argumentinvalid, the Examiner further argues that despite the
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`intended use of the electric motor (for flywheel energy storage rather than for direct
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`output to the tool head), Geirasis in fact analogous art and should be treated as such.
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`The determination of analogous art is madeif; (1) the reference is from the same field or
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`endeavor as the claimed invention (even if it addresses a different problem) or (2) the
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`reference is reasonably pertinent to the problem faced by the inventor (even if it is not in
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`the same field of endeavor as the claimed invention). The Geiras reference satisfies
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`both of the requirements of the current application.
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`In order to make the comparison, it
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`mustfirst be determined what the field of endeavor of the current application consists of
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`and more specifically the specific limitation that is addressed by the 103 combination
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`that utilizes the Geiras reference. - “a momentof inertia on the side of the driven
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`magnet member being larger than a momentof inertia on the side of the driving magnet
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`member’. Analysis of this limitation indicates that the field of endeavor consists of the
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`relationship between a rotor and a stator in an electric powered motor. Further analysis
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`of the tool that is powered by the motor is not relevant to this analysis, as the Examiner
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`is not substituting the device of Hornschuch with Geiras, but merely the specific
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`mathematical conceptof the design analysis that applies to the relationship between
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`rotor and stator. The Geiras device is a flywheel energy storage (FES) device. This
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`device utilizes an electrical field to control the magnetic forces between the rotor and
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`the stator in an identical fashion as the common rotor and stator arrangement of an
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`electric motor. The primary difference between the typical electric motor and the FES of
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`Geiras is that an electric motor outputs the mechanical (kinetic) energy that is created
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`

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`Application/Control Number: 17/049,91 14
`Art Unit: 3731
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`Page 7
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`by the motor to an output shaft at the same time the mechanical (kinetic) movement is
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`created, while an FES stores the mechanical (kinetic) energy in the spinning rotor for
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`extraction at a later time. As such, it is clear that the Geiras referenceis (1) from the
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`same field of endeavor (a flywheel is an electric motor that uses electricity in order
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`to translate electric energy into mechanical (kinetic) energy via the spinning of a
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`rotor) and (2)
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`the reference is reasonably pertinent to the problem faced by the
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`inventor (the problem being the design analysis of the ratio between rotor and
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`stator).
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`C. The Geiras reference and the Final Rejection specifically address the
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`relationship of the momentofinertia of both the driven and driving magnet. The Final
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`Rejection cites to paragraphs [0023-0025] in their entirety, while paraphrasing a specific
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`portion of the language in order to highlight the relationship (page 9 of Geiras states —
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`“The theoretical and practical applications of the science taught in Geiras is best
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`seen in paragraph’s 23-25. ...” thus ensuring that the material stated in these
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`paragraphsis a valid part of the rejection for analysis). Upon reviewing this
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`material along with the commentary of the Final Rejection, it is clear that the Geiras
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`reference, in combination with Hornschuchclearly meets the claim limitations as well as
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`negating any argumentthat the Geiras reference is not analogous art. So as to ensure
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`this discussion is on the record, the Examiner will include the complete language from
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`these portions as part of the analysis;
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`

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`Application/Control Number: 17/049,91 14
`Art Unit: 3731
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`Page 8
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`[0023] “Rotor 32 surroundsstator cores 24 andstator coils 28,
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`thereby occupying a volume much greater than that of the inner
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`stator components(stator support 22, stator cores 24, stator
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`coils 28). Rotor 32 can be madeas large and as massive as is
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`desired for a particular embodiment, thereby performing the function
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`of flywheel 11 of FES system 10 of the prior art (shown in FIG. 1). As
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`seen in FIG. 2, there is not a separate flywheel in IFES system 20.
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`Accordingly, in the present disclosure, rotor 32 of the
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`electromechanical motor/generator also performs the function of a
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`flywheel, integrating rotor 32 and a flywheel as a single component,
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`thereby creating integrated flywheel energy storage (IFES)
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`system 20. In the illustrated embodiment, the mass of
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`rotor 32 (m.sub.rotor) is greater than the mass of
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`stator 21 (m.sub.stator). IFES system 20 of the present disclosure
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`can be describedin terms of the ratio of m.sub.rotor to m.sub.stator.
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`In the illustrated embodiment, m.sub.rotor/m.sub.stator is greater
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`than 1. In some embodiments, m.sub.rotor/m.sub.stator is greater
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`than 10. In other embodiments, m.sub.rotor/m.sub.stator can be a
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`value between 50 and 100. In yet other embodiments,
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`m.sub.rotor/m.sub.stator can be 100 or greater.
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`[0024] In the illustrated embodiment, rotor housing 25 is constructed
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`of a high-strength fiberglass composite material structure that is
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`able to withstand rotational speed of 20,000 rpm. In other
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`

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`Application/Control Number: 17/049,91 14
`Art Unit: 3731
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`Page 9
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`embodiments, other various high-strength structures can be used to
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`construct rotor housing 25, in order to withstand a rotational speed
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`in excess of 20,000 rpm. In some embodiments, maximum rotational
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`speed may be 100,000 rpm or higher. In other embodiments, rotor
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`housing 25 may be constructed of other materials. For example,
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`rotor can be constructed of metal, or a metal alloy. In some
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`embodiments, rotor housing 25 can be constructedof a high-
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`strength metalalloy. In other embodiments, rotor housing 25 may be
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`a combination of metal and non-metal components. In some
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`embodiments, rotor 32 may be designedto operate at a speed less
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`than 20,000 rpm. The designer of IFES system 20 can select the size,
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`weight, materials of construction, and maximum operating speed of
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`rotor 32 as necessary to obtain the desired overall size, weight, and
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`energy storage capacity of IFES system 20 for a particular system
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`application. Equation 1 under the description of FIG. 1 applies to
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`IFES system 20, whereby the stored kinetic energyis directly related
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`to the rotational momentof inertia and to the square of the rotational
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`speed.
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`[0025] In some embodiments, minimizing the overall mass of IFES
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`system 20relative to its energy storage capacity may be important,
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`with applications aboardaircraft and spacecraft being non-limiting
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`examples. Therefore, a design objective may be to minimize the
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`massof all components which do not contribute significantly to the
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`

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`Application/Control Number: 17/049,91 14
`Art Unit: 3731
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`Page 10
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`rotational moment of inertia (1). Increasing the ratio of
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`m.sub.rotor/m.sub.stator, as noted above, can help to achieve this
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`goal. Important design parameters that may be usedinclude, for
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`example, the ratio of rotational momentof inertia (1) to total system
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`mass (m), and the ratio of maximum energy storage capacity to total
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`system mass(I/m). Therefore, IFES system 20 of the present
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`disclosure can allow a system designerto attain values for these
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`design parameters that greatly exceed values for FES systemsofthe
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`prior art. From equation 1, the stored rotational kinetic energy
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`(KE.sub.Rotational) of IFES system 20is directly related to the
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`rotational moment ofinertia (I) for a given angularvelocity (w). In an
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`embodiment, IFES system 20 enables total system mass
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`(m.sub.IFES) to be reducedto a value that is 70-90% of the total
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`system mass (m.sub.FES) of FES system 10 of the prior art for an
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`equivalent stored rotational kinetic energy (KE.sub.Rotational) and
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`angularvelocity (w). In some embodiments, the reductionin total
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`system mass (m.sub.IFES) of IFES system 20 can beto a value that
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`is less than 70% of the total system mass (m.sub.FES) of FES
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`system 10 of the prior art. From comparing FIG. 2 to FIG. 1, itcan be
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`seen that the reduction in total system mass (m.sub.IFES) of IFES
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`system 20 is a result of rotor 32, which performs the function of a
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`flywheel, being annularin structure. An annular flywheel structure
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`distributes more of the flywheel massto an outer radius (measured
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`

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`Application/Control Number: 17/049,91 14
`Art Unit: 3731
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`Page 11
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`from the axis of rotation), thereby allowing a greater contribution to
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`the rotational momentofinertia (1), as seen in equation 1. Moreover,
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`the annular-shape of rotor 32 creates an open central region where
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`stator 21 is situated, thereby contributing to the more compactsize
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`of IFES system 20”.
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`Finally, the remainder of the claims are argued to depend from the above
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`independent claim, and thusly should be allowable, as they do not redress the
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`“supposed” deficiencies of the references. The arguments and rejections to the
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`aboveclaims nullify the arguments regarding the dependent claims.
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`For the above reasons, it is believed that the rejections should be sustained.
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`Respectfully submitted,
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`/DANIEL JEREMY LEEDS/
`Examiner, Art Unit 3731
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`Conferees:
`
`/ANNA K KINSAUL/
`Supervisory Patent Examiner, Art Unit 3731
`
`/CLINTON T OSTRUP/
`Supervisory Patent Examiner, Art Unit 3732
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`Requirementto pay appeal forwarding fee.
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`In order to avoid dismissal of the instant
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`appeal in any application or ex parte reexamination proceeding, 37 CFR 41.45 requires
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`paymentof an appeal forwarding fee within the time permitted by 37 CFR 41.45(a),
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`unless appellant had timely paid the fee for filing a brief required by 37 CFR 41.20(b)in
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`effect on March 18, 2013.
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`